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Nominet UK Dispute Resolution Service |
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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> County Homesearch International Plc v Robertson [2005] DRS 02695 (10 August 2005) URL: http://www.bailii.org/uk/cases/DRS/2005/2695.html Cite as: [2005] DRS 02695, [2005] DRS 2695 |
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Complainant: County Homesearch International Plc
GB
Respondent: Miss L.E. Robertson
GB
countyhomesearch.co.uk ("the Domain Name")
3.1. A hard copy of the Complaint was received in full by Nominet on 3 June 2005. Nominet validated the Complaint and notified the Respondent of the Complaint on 8 June 2005.
3.2. No Response was received by the Respondent and therefore informal mediation was not possible. On 21 July 2005 the Complainant paid the fee to obtain the Expert Decision pursuant to paragraph 21 of the procedure for the conduct of proceedings under the Nominet Dispute Resolution Service ("the Procedure").
3.3. On 22 July 2005, Nick Phillips, the undersigned ("the Expert"), confirmed to Nominet that he knew of no reason why he could not properly accept the invitation to act as the Expert in this case and further confirmed that he knew of no matters which ought to be drawn to the attention of the parties, which might appear to call into question his independence and/or impartiality.
4.1. The Respondent has not submitted a Response to Nominet in time (or at all) in compliance with paragraph 5(a) of the Procedure.
4.2. Paragraph 15(b) of the Procedure provides, inter alia, that "If, in the absence of exceptional circumstances, a Party does not comply with any time period laid down in the Policy or this Procedure, the Expert will proceed to a Decision on the complaint".
4.3. Nominet appears to have used all of the available contact details to try to bring the Complaint to the Respondent's attention. There do not appear to me to be any exceptional circumstances involved and I will therefore proceed to a Decision on the Complaint notwithstanding the absence of a Response.
5.1. The Complainant is County Homesearch International Plc.
5.2. The Respondent is Miss L.E. Robertson. The Respondent registered the Domain Name on 31 July 2003.
5.3. The Complainant runs a business searching for properties for its clients to buy and rent.
5.4. As well as the Complainant company, there are at least another 28 companies which include, "County Homesearch" in their title. These companies are distinguished, one from the other, by the area in which they operate. For example, the County Homesearch company (Beds, Herts. & Cambs.) Limited operates in Bedfordshire, Hertfordshire and Cambridgeshire.
5.5. County Homesearch Company is the registered proprietor of a UK registered trade mark No. 2107407 for a series of two marks, including the mark, THE COUNTY HOMESEARCH COMPANY.
5.6. The Complainant is the owner of the domain names county-homesearch.com, countyhomesearch.com and county-homesearch.co.uk.
5.7. As well as the Domain Name the Respondent is also the owner of the domain name augusthomefinders.co.uk, which previously linked to the website of August Homefinders, a business competing with the Complainant.
5.8. The Complainant or companies containing the words 'County Homesearch' in their title, has advertised widely in the national and local press under the name County Homesearch Company and has also been the subject of a number of press articles.
5.9. The Domain Name currently links to a website entitled, "Richard Mellor Property Purchasing Consultant" which appears to offer similar services to those offered by the Complainant's business.
5.10. The Complainant wrote to the Respondent asking about their intentions for the Domain Name on 2 November 2004. Mr. Mellor replied on 15 November 2004 offering to rent the Domain Name to the Complainant for the sum of £99 + VAT per month or to sell it for the sum of £5,000 + VAT.
The parties' contentions can be summarised as follows:
Complainant
6.1. In its Complaint, the Complainant makes the following submissions:
6.1.1. The Domain Name is identical or similar to a name or mark in which the Complainant has Rights;
6.1.2. The Domain Name in the hands of the Respondent is an Abusive Registration;
6.1.3. The Complainant has a UK registered trade mark for the mark County Homesearch Company;
6.1.4. The Complainant has been registered in the UK since 1997. In addition to the Complainant's business there are a total of 28 other UK limited companies which operate on a franchise basis and which are franchised by the Complainant. These other limited companies all contain the words, "County Homesearch" in their title and are distinguished, one from the other, by the area in which they operate.
6.1.5. The Complainant has advertised widely under its name, including placing a weekly advertisement in Country Life for the last 13 years, in Country Homes & Interiors, in Country Illustrated as well as in the Sunday Times, and the Daily Telegraph.
6.1.6. The Complainant has also been the subject of a lot of local newspaper coverage which dates back to 1991.
6.1.7. The Domain Name use to redirect automatically to the website of August Home Finders which offered similar services to the Complainant. Recently, however the business of August Homefinders appears to have been discontinued and both the domain name augusthomefinders.co.uk and the Domain Name both pointed to a chat room. More recently, the Domain Name was pointed to a site offering it for sale.
6.1.8. The Complainant does not wish to pay £5,000 + VAT for the Domain Name and believes that the Domain Name should belong to it as of right;
Respondent
6.2. The Respondent has not responded to the Complaint.
General
Under clause 2 of the DRS Policy ("the Policy") the Complainant is required to show, on the balance of probabilities that:
7.1. It has Rights in respect of a name or mark which is identical or similar to the Domain Name; and
7.2. The Domain Name, in the hands of the Respondent, is an Abusive Registration.
Complainant's Rights
7.3. The first question I must answer is therefore whether the Complainant has proved on the balance of probabilities that it owns Rights in a name or mark that is identical or similar to the Domain Name.
7.4. The Policy defines Rights as including but not being limited to, " .rights enforceable under English law ..". This has always been treated in decisions under Nominet's DRS as a test with a low threshold to overcome and I think that must be the correct approach.
7.5. The Complainant has produced a number of advertisements and press articles which refer to its services. Additionally, it has been registered in the UK since 1997 with a name including the words "The County Homesearch Company" (it changed its name from The County Homesearch Company (Holdings) Limited in September 1997), and it gives details of some 28 other UK limited companies which it describes as its franchise operations. There is some doubt in my mind as to the connection between the Complainant and these "franchise" operations. The Complainant has provided no evidence that these businesses are linked in any way, and some of the press articles and advertisements do relate to these "franchise businesses" rather than the Complainant although I have looked at the Complainant's website and this does strongly suggest that the Complainant's business is both well established and national.
7.6. In addition, the Complainant relies on a registered trade mark for the mark. The County Homesearch Company. This mark was registered in 1996 before the incorporation of the Complainant and is registered in the name of The County Homesearch Company, not in the name of the Complainant. There is however some evidence that the business being carried on by the Complainant was being carried on by an unincorporated body prior to the incorporation of the Complainant and certainly a number of the press articles date from before the incorporation of the Complainant. It may well be therefore that the Complainant is the successor to The County Homesearch Company.
7.7. There is therefore some uncertainty about the rights which the Complainant does hold and it would have been helpful to see some information about the business which carried on the Complainant's business prior to its incorporation as well as about the links between the Complainant and the "franchise" companies. The Complainant does however appear to be carrying on a substantial business and I am satisfied, on the balance of probabilities that the Complainant has rights in the name The County Homesearch Company.
7.8. Ignoring the first and second level suffixes as I must do the name in which the Complainant has Rights, the County Homesearch Company, differs from the Domain Name only in the respect that it includes the word, "the" and the word "company". In the circumstances I have no hesitation in finding that the Complainant has Rights in a name that is identical or at least similar to the Domain Name.
Abusive Registration
7.9. Having concluded that the Complainant has Rights in a name which is identical to the Domain Name, I must consider whether the Domain Name constitutes an Abusive Registration. An Abusive Registration is defined in the Policy as a Domain Name which either:
(a) was registered or otherwise acquired in a manner which, at this time when the registration or acquisition took place, took unfair advantage of or was unfairly detrimental to the Complainant's Rights; OR
(b) has been used in a manner which took unfair advantage of, or was unfairly detrimental to the Complainant's Rights.
7.10. This definition allows me to consider whether a Domain Name constitutes an Abusive Registration at any time and not, for example, just the time of registration / acquisition.
7.11. Paragraph 3 of the Policy provides a non-exhaustive list of the factors which may evidence that a domain name is an Abusive Registration. It is worthwhile setting out paragraph 3 of the Policy in full:
"3. Evidence of Abusive Registration
a. A non-exhaustive list of factors which may be evidence that the Domain Name is an Abusive Registration is as follows:
i. Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name primarily:
A for the purposes of selling, renting or otherwise transferring the Domain Name to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly associated with acquiring or using the Domain Name;
B as a blocking registration against a name or mark in which the Complainant has Rights; or
C for the purpose of unfairly disrupting the business of the Complainant;
ii. Circumstances indicating that the Respondent is using the Domain Name in a way which has confused people or businesses into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant;
iii. The Complainant can demonstrate that the Respondent is engaged in a pattern of registrations where the Respondent is the registrant of domain names (under .uk or otherwise) which correspond to well known names or trade marks in which the Respondent has no apparent rights, and the Domain Name is part of that pattern;
iv. It is independently verified that the Respondent has given false contact details to us; or
v. The domain name was registered as a result of a relationship between the Complainant and the Respondent, and the Complainant:
A has been using the domain name registration exclusively; and
B paid for the registration and / or renewal of the domain name registration.
b. Failure on the Respondent's part to use the Domain Name for the purposes of e-mail or a website is not in itself evidence that the Domain Name is an Abusive Registration."
7.12. In my decision there are two main things to look at here. Firstly, there is the Respondent's use of the Domain Name, and secondly the offer which was made to sell or rent the Domain Name to the Complainant.
Respondent's Use of the Domain Name
7.13. In the Complaint the Complainant details the Respondent's use of the Domain Name. This use has changed over time and indeed the Respondent's current use of the Domain Name. This can be summarised as including the following:
- to link to the website of August Home Finders, which was a direct competitor of the Complainant;
- to link to a chat room or forum;
- to link to a page offering it for sale.
- to link to a website entitled, "Richard Mellor Property Purchasing Consultant" which details the services which Mr. Mellor offers and which appear to compete with the Complainant.
7.14. I should say that although the Complainant has provided print-outs of some of these uses, it has not been able to document all of them fully or to properly evidence that the Domain Name was being used to link to all of the various sites listed above.
7.15. It is however beyond doubt that the Domain Name is currently being used to link to a website which advertises the services of Mr Mellor and describes him as a property purchasing consultant. It is also beyond doubt that the Complainant carries on business providing similar services. It therefore seems to me to be extremely likely that potential clients of the Complainant will visit the site to which the Domain Name links and will assume that the site being hosted there is in some way connected to or authorised by the Complainant. The likelihood of this kind of confusion is particularly acute given the extremely similar nature of the Complainant's business and the business which appears to be being carried on by Mr Mellor and I may not be so inclined to make such a finding if, for example, the website being linked to the Domain Name related to an entirely different business. In short there must be a real danger that business will be diverted from the Complainant to Mr Mellor's business.
7.16. In all the circumstances therefore, I am satisfied that the Respondent is using the Domain Name in a way which has confused people or businesses into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Claimant and on that basis the Domain Name is an Abusive Registration. I would also add to this the fact that the Respondent also owns a domain name which was linked to one of the websites of one of the Complainant's competitors, albeit that that business might now have ceased to trade.
Offer to sell
7.17. Having found that the Domain name is an Abusive Registration I do not need go any further. However for completeness I will deal with the Respondent's offer to sell the Domain Name. The Respondent (or at least Mr. Mellor on behalf of the Respondent) made an offer to sell the Domain Name for the sum of £5,000, or at least to rent the Domain Name for a sum of £99 per month.
7.18. It does not automatically follow that an offer to sell a domain name for a price in excess of a party's documented out-of-pocket costs directly associated with acquiring or using that domain name amounts to an Abusive Registration. Paragraph 3aiA of the Policy lists as one of the non-exhaustive factors which may be evidence that the Domain Name is an Abusive Registration the fact that the Respondent has registered the Domain Name primarily for the purposes of selling, renting or otherwise transferring the Domain Name to the Complainant or to a competitor of the Complainant for consideration in excess of the Respondent's documented out-of-pocket costs directly associated with acquiring or using the Domain Name.
7.19. In this case I do not think it can be said that the Respondent has acquired the Domain Name primarily for the purposes of selling it to the Complainant at a profit. The Respondent has clearly used the Domain Name to link to other sites and the Domain Name currently links to a site which advertises services which would appear to compete with the Complainant. I therefore do not find that this offer to sell the Domain Name is by itself evidence of an Abusive Registration although as I have said above this is irrelevant as I have already decided for other reasons that the Domain Name is an Abusive Registration
8.1. In the circumstances, I find that the Complainant has proved on the balance of probabilities that it has Rights in a name or mark which is identical or similar to the Domain Name and that the Domain Name is an Abusive Registration in the hands of the Respondent. I therefore decide that the Domain Name should be transferred to the Complainant.
..
NICK PHILLIPS
10 August 2005
